THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
`The opinion in support of the decision being entered
`today (1) was not written for publication in a law
`journal and (2) is not binding precedent of the Board.
`Paper No. 22
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`________________
`Ex parte TEDDY J. HIRSCH and DON L. IVEY
`________________
`Appeal No. 1999-1037
`Application 08/804,284
`________________
`HEARD: FEBRUARY 22, 2000
`________________
`Before ABRAMS, STAAB and BAHR, Administrative Patent Judges.
`STAAB, Administrative Patent Judge.
`
`DECISION ON APPEAL
`This is a decision on an appeal from the examiner’s final
`rejection of claims 1, 3, 4, 11, 12 and 15. Claims 20-22, the
`only other claims remaining in the application, have been
`allowed. An amendment filed subsequent to the final rejection
`on April 24, 1998 has been entered.
`
`-1-
`
` Progressive Exhibit 2009
`Liberty Mutual v. Progressive
`CBM2012-00002
`
`
`The opinion in support of the decision being entered
`today (1) was not written for publication in a law
`journal and (2) is not binding precedent of the Board.
`Paper No. 22
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`________________
`Ex parte TEDDY J. HIRSCH and DON L. IVEY
`________________
`Appeal No. 1999-1037
`Application 08/804,284
`________________
`HEARD: FEBRUARY 22, 2000
`________________
`Before ABRAMS, STAAB and BAHR, Administrative Patent Judges.
`STAAB, Administrative Patent Judge.
`
`DECISION ON APPEAL
`This is a decision on an appeal from the examiner’s final
`rejection of claims 1, 3, 4, 11, 12 and 15. Claims 20-22, the
`only other claims remaining in the application, have been
`allowed. An amendment filed subsequent to the final rejection
`on April 24, 1998 has been entered.
`
`-1-
`
` Progressive Exhibit 2009
`Liberty Mutual v. Progressive
`CBM2012-00002
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`Appellant’s invention “relates to crushable roadway crash
`cushions and, more specifically, those crash cushions which
`contain collapsible barrels, drums or like members”
`(specification, page 1). Independent claims 1 and 11 are
`representative of the appealed subject matter. A copy of the
`appealed claims can be found in an appendix to appellant’s
`brief.
`The references of record relied upon by the examiner in
`support of rejections under 35 U.S.C. § 103 are:
`Boedecker, Jr. et al. (Boedecker)
`3,845,936
`5, 1974
`Carney, III ('326)
`5,011,326
`1991
`Carney, III ('112)
`5,403,112
`1995
`
`Nov.
`Apr. 30,
`Apr. 4,
`
`A reference of record relied upon by this merits panel of
`the Board in support of a new rejection pursuant to 37 CFR
`§ 1.196(b) is:
`Carney, III ('310)
`1980
`
`4,200,310
`
`Apr. 29,
`
`The following rejections under 35 U.S.C. § 103 are before
`
`-2-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`us for review:1
`
`1) claims 1, 3 and 4, unpatentable over Boedecker in view
`of Carney ‘326; and
`2) claims 11, 12 and 15, unpatentable over Boedecker in
`view of Carney ‘112.
`
`Rejection 1
`Considering first the examiner’s rejection of claims 1, 3
`and 4 as being unpatentable over Boedecker in view of Carney
`‘326, the examiner considers that Boedecker discloses the
`subject matter of claim 1 except for a structural
`reinforcement “comprising a telescoping bracket assembly.” In
`particular, the examiner considers that Boedecker’s sheet-like
`
` In the final rejection, claims 1, 3, 4, 11, 12, 15, and
`1
`20-22 were also rejected under 35 U.S.C. § 112, second
`paragraph. The rejection of claims 20-22 on this ground has
`been expressly withdrawn. See page 2 of the answer.
`Regarding the rejection of claims 1, 3, 4, 11, 12 and 15 under
`35 U.S.C. § 112, second paragraph, since these claims have
`been amended subsequent to the final rejection in such a
`manner so as to apparently overcome the examiner’s criticisms
`thereof, and since no mention of this rejection has been made
`by the examiner in the answer, we presume that the examiner
`also has withdrawn the final rejection of claims 1, 3, 4, 11,
`12, and 15 on this ground.
`Ex parte Emm, 118 USPQ 180, 181
`(Bd. App. 1957).
`
`-3-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`“fish scales” 60 comprise structural reinforcement extending
`2
`along a portion of a side of the crash cushion. The examiner
`further considers (answer, pages 3-4) that Carney ‘326
`“teaches that it is known in the art to form a cushioning
`apparatus with telescoping support members (discussed in
`column 3 line 57 through column 4 line 2) comprising tubes
`viewed as a pipe segment slidably disposed within a sleeve.”
`According to the examiner (answer, page 4), it would have been
`obvious to one of ordinary skill in view of these teachings to
`modify the bracket of the structural reinforcement of
`Boedecker by incorporating therein telescoping tubes
`comprising a pipe segment slidably disposed within a sleeve.
`We cannot support the examiner’s position. The
`disclosure of Carney ‘326 relied upon by the examiner is found
`in the “Background of the Invention” section of Carney ‘326
`and reads as follows:
`Examples of other forms of stationary energy
`absorbing barriers, which are known to exist in the
`prior art, include the following: . . . a U-shaped
`
` As explained at column 5, line 53, through column 6,
`2
`line 5, and as shown in Figures 6A-6C of Carney ‘326, “fish
`scales” 60 are composite structures, each comprising a plywood
`sheet 62 having a metal sheet 66 secured thereof.
`-4-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`tubular guardrail energy absorbing barrier that
`absorbs energy by means of the motion of supporting
`telescopic tubes such that upon impact, the impact
`forces are transmitted axially to arms, which
`contain many stainless steel torus elements that are
`squeezed between two cylindrical tubes . . . .
`[Column 3, line 57, through column 4, line 2;
`emphasis added.]
`There are no drawings or other detailed description of this
`device in Carney ‘326.
`We have carefully considered the above noted disclosure
`of Carney ‘326. We also have considered the rest of the
`disclosure of Carney ‘326. Despite our best efforts, we
`simply cannot determine with any degree of certainty precisely
`what the device described at column 3, line 57, through column
`4, line 2, might
`
`look like. In a nutshell, the teachings of Carney at column
`3,
`line 57, through column 4, line 2, are simply too obscure to
`provide a basis for establishing a prima facie case of
`obviousness of the subject matter of claim 1. More
`specifically, the cryptic description of “a U-shaped tubular
`guardrail” having “supporting telescopic tubes” that transmit
`
`-5-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`impact forces axially to “arms” which may contain “torus
`elements” that are squeezed between “two cylindrical tubes” is
`vague and ambiguous and cannot reasonably be considered to
`have suggested to the ordinarily skilled artisan the kind of
`modification to Boedecker necessary to arrive at the subject
`matter of claim 1. Moreover, it is not clear how the examiner
`intends to modify the primary reference in that it is not
`clear what constitutes the “bracket” of Boedecker’s structural
`reinforcement. In addition, we are in agreement with
`appellant’s argument on page 9 of the brief that neither one
`of the applied references teaches the claimed telescoping
`bracket assembly surrounding a collapsible member. For these
`reasons, the standing § 103 rejection of claims 1, 3 and 4
`cannot be sustained.
`
`Rejection 2
`Turning to the examiner’s rejection of claims 11, 12 and
`
`15
`
`as being unpatentable over Boedecker in view of Carney ‘112,
`the examiner concedes that Boedecker does not disclose
`collapsible members having different resistances to crushing,
`-6-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`as called for in claim 11. Nevertheless, the examiner
`considers (answer, page 4) that Carney ‘112 teaches this
`concept. Based on this alleged teaching of Carney ‘112, the
`examiner concludes that it would have been obvious to modify
`the collapsible members of Boedecker by providing in the
`Boedecker device collapsible members having different
`resistances to crushing in order to increase the control of
`deformation of the collapsible members thereby increasing the
`cushioning effect of the apparatus.
`The thrust of Carney ‘112 is the use of a particular type
`of plastic material, namely, high molecular weight/high
`density polyethylene (HMW/HDPE), to fabricate collapsible
`members for crushable roadway crash cushions. We appreciate
`that in Carney ‘112 the collapsible members of HMW/HDPE
`comprise cylinders that may have different diameters and
`different wall thicknesses (column 3, lines 59-61; column 16,
`lines 52-54). We also appreciate that Carney ‘112 discloses
`that there are a variety of prior art highway safety crash
`cushions that utilize cylinders made of mild steel where the
`wall thicknesses may vary from cylinder to cylinder (column 9,
`lines 16-18; column 9, lines 21-23). Still further, we
`-7-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`appreciate that collapsible members made
`of cylinders of HMW/HDPE may be utilized in such prior art
`devices. Finally, we acknowledge that the crush resistance of
`a collapsible member fabricated as a cylinder may very well be
`varied by changing the wall thickness of the cylinder while
`retaining all other design aspects thereof (i.e., by changing
`only the wall thickness of the cylinder). The difficulty we
`have with the examiner’s position, however, is its failure to
`specifically point out where in the 50 sheets of drawings and
`16 columns of specification of Carney ‘112 there is found a
`teaching of using collapsible members of different crush
`resistance in a highway safety crash cushion. Moreover, while
`we appreciate that in evaluating prior art references it is
`proper to take into account not only the specific teachings of
`the references but also the inferences which one skilled in
`the art would reasonably be expected to draw therefrom (see In
`re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)),
`in the present instance we do not view this maxim of patent
`law as relieving the examiner of the initial burden of
`pointing out where the applied prior art teaches or suggests
`
`-8-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`appellant’s invention.
`
`In the present application, appellant has reasonably
`challenged (brief, page 12) the examiner’s findings with
`respect to Carney ‘112. In response, the examiner has merely
`reiterated (answer, page 6) that “[Carney ‘112] teaches that
`it is known in the art to form collapsible members having
`different resistances to crushing” without pointing out where
`this teaching is found in the reference. Because it is not
`apparent to us on this record that one of ordinary skill in
`the art would have gleaned from Carney ‘112 a teaching of
`providing collapsible members of varying crush resistance in a
`highway safety crash cushion, we hold that the examiner has
`not established a prima facie case of obviousness of claims
`11, 12 and 15 based on the teachings of Boedecker and Carney
`‘112. It follows that we will not sustain the examiner’s
`rejection of claims 11, 12 and 15.
`
`New Rejections under 37 CFR § 1.196(b)
`
`-9-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`Claims 11, 12 and 15 are rejected under 35 U.S.C. § 112,
`first paragraph, as being based on a disclosure that fails to
`comply with the written description requirement found in that
`paragraph of the statute.
`
`The test for determining compliance with the written
`description requirement found in the first paragraph of 35
`U.S.C. § 112 is whether the disclosure of the application as
`originally filed reasonably conveys to the artisan that the
`inventor had possession at that time of the later claimed
`subject matter, rather that the presence or absence of literal
`support in the specification for the claim language.
`In re
`Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
`1983). The content of the drawings may also be considered in
`determining compliance with the written description
`requirement.
`Id.
`In the present application, the originally filed
`disclosure does not provide support for a crash cushioning
`
`-10-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`apparatus that comprises a first collapsible member having a
`first resistance to crushing and a second collapsible member
`having a second lesser resistance to crushing, wherein the
`first collapsible member is located along a longitudinal side
`of the cushioning apparatus and closest to a fixed structure,3
`which limitation was added to claim 11 by the amendment filed
`February 19, 1998 (Paper No. 9). Accordingly, the originally
`filed disclosure would not reasonably convey to the artisan
`that appellant had possession at that time of the apparatus as
`now recited in claims 11, 12 and 15.
`Claims 11, 12 and 15 are also rejected under 35 U.S.C. §
`112, second paragraph, as failing to particularly point out
`and distinctly claim the subject matter appellant regards as
`the invention.
`In determining whether the claims set out and
`circumscribe a particular area with a reasonable degree of
`
` Based on a reading of claim 11 and claim 12, it is
`3
`clear that the “first collapsible member” of claim 11
`corresponds to one of the disclosed barrels A, that the
`“second collapsible member” of claim 11 corresponds to one of
`the disclosed barrels B, and that the “third collapsible
`member” of claim 12 corresponds to one of the disclosed
`barrels C.
`
`-11-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`precision and particularity, the definiteness of the language
`employed in the claims must be analyzed, not in a vacuum, but
`always in light of the teachings of the prior art and of the
`particular application disclosure as it would be interpreted
`by one possessing the ordinary level of skill in the pertinent
`art.
`In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193
`(CCPA 1977). In addition, claims must accurately define the
`invention.
`In re Knowlton, 481 F.2d 1357, 1365, 178 USPQ 486,
`492 (CCPA 1973). The above discussed lack of descriptive
`support in appellant’s disclosure for the subject matter
`recited in claim 11 renders the scope and accuracy of claims
`11, 12 and 15 unclear when they are read, as they are required
`to be, in light of the underlying disclosure.
`
`Claim 1 is rejected under 35 U.S.C. § 102(b) as being
`anticipated by U.S. Patent 4,200,310 to Carney, of record.
`Carney ‘310 discloses an energy absorbing system 10
`comprising a plurality of collapsible barrels 16 mounted to an
`object 12, which may be either a highway service vehicle or a
`stationary energy absorbing barrier (column 4, lines 13-16;
`
`-12-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`column 6, lines 5-16; column 12, line 66 through column 13,
`line 5). The system includes a U-shaped frame made up of
`impact plate assembly 18 and structural member 106, 108.
`Object 12 includes structural tubing members 42, 44.
`Structural members 106, 108 are received in structural tubing
`members 42, 44 for sliding movement therein (column 11, lines
`28-33). When a vehicle collides with the impact plate
`assembly, the impact plate assembly and structural members
`106, 108 are displaced as a unit, with the structural members
`106, 108 sliding in the tubing members 42, 44, while the
`barrels 16 collapse to absorb the impact forces of the
`collision. See Figure 8.
`Reading claim 1 on the energy absorbing system of Carney
`‘310, the Carney ‘310 system comprises a crash cushioning
`apparatus capable of cushioning impacts with a fixed structure
`comprising a plurality of collapsible members 16 extending
`
`between a downstream end and an upstream end and presenting a
`longitudinal side, and a structural reinforcement 18, 42, 44,
`106, 108 extending along a portion of the side, of the
`collapsible members. The structural reinforcement of Carney
`-13-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`‘310 comprises elements 106, 108 capable of reducing
`penetration of the collapsible members from an impact to the
`longitudinal side, at least to some extent, and a telescoping
`bracket assembly 42, 44 and 106, 108 that surrounds at least
`one of the collapsible members 16.
`
`Remand
`Pursuant to 37 § CFR 1.196(a) and MPEP § 1211, this
`application is also remanded to the examiner for consideration
`of the following matters.
`Claims 3 and 4 depend from claim 1 and further call for
`the telescoping bracket assembly to be in the form of either a
`U-shaped (claim 3) or V-shaped (claim 4) section of pipe
`nested within a sleeve. The examiner should consider whether
`it would be appropriate to enter a new prior art rejection of
`either of these claims in light of the disclosure of Carney
`‘310 and other prior art of which the examiner may be aware.
`
`Claim 11 calls for a cushioning apparatus comprising a
`first collapsible member having a first resistance to
`crushing, and a second collapsible member having a second
`-14-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`resistance to crushing, with the second resistance to crushing
`being lesser than the first resistance. Carney ‘310 discloses
`an energy absorbing system having collapsible barrels 16 of
`varying crush resistance to cause the barrels to collapse with
`desired predetermined crushing characteristics. See column 8,
`line 63 through column 9, line 4; column 12, lines 28-65.
`Thus, the teachings of Carney ‘310 would appear to be highly
`relevant to the subject matter presented in claims 11, 12 and
`15. The examiner should consider whether it would be
`appropriate to enter a new prior art rejection of any of these
`claims in light of the above noted disclosure of Carney ‘310,
`either alone or in combination with other prior art of which
`the examiner may be aware.
`If the examiner determines that a rejection based on
`Carney ‘310, either alone or in combination with other prior
`art, is appropriate, then such rejection(s) should be made and
`appellant provided with an opportunity to respond thereto.
`
`Summary
`-15-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`The examiner’s rejections of the appealed claims are
`reversed.
`New rejections of claims 1, 11, 12 and 15 pursuant to our
`authority under 37 CFR § 1.196(b) have been made.
`In addition, this application is remanded to the examiner
`under 37 § CFR 1.196(a) for consideration of whether it would
`be appropriate to enter a new prior art rejection of any of
`claims 3, 4, 11, 12 and 15 in light of the teachings of Carney
`‘310.
`
`The decision of the examiner is reversed.
`This decision contains a new ground of rejection pursuant
`to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
`rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
`Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
`37 CFR § 1.196(b) provides that, “A new ground of rejection
`shall not be considered final for purposes of judicial
`review.”
`37 CFR § 1.196(b) also provides that the appellant,
`WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
`one of the following two options with respect to the new
`ground of rejection to avoid termination of proceedings
`-16-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`(§ 1.197(c)) as to the rejected claims:
`(1) Submit an appropriate amendment of the
`claims so rejected or a showing of facts relating to
`the claims so rejected, or both, and have the matter
`reconsidered by the examiner, in which event the
`application will be remanded to the examiner. . . .
`(2) Request that the application be reheard
`under § 1.197(b) by the Board of Patent Appeals and
`Interferences upon the same record. . . .
`No time period for taking any subsequent action in
`connection with this appeal may be extended under 37 CFR
`§ 1.136(a).
`
`REVERSED AND REMANDED,
`37 CFR § 1.196(b)
`
`)
`
`))))
`
`) BOARD OF PATENT
`) APPEALS AND
`) INTERFERENCES
`
`))
`
`)
`)
`
`NEAL E. ABRAMS
`Administrative Patent Judge
`
`LAWRENCE J. STAAB
`Administrative Patent Judge
`
`JENNIFER D. BAHR
`Administrative Patent Judge
`
`-17-
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`Appeal No. 1999—1037
`Application 08/804,284
`
`-18-
`
`_l8_
`
`
`
`Appeal No. 1999-1037
`Application 08/804,284
`
`Felsman, Bradley, Vaden, Gunter
`& Dillion
`One Riverway
`Suite 1100
`Houston, TX 77086-1920
`
`-19-
`
`
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